A: not clear why expression is the source of value of the
software. Depends on what you mean by expressive. The expression is limited in that it produces
the function, even if you feel like the code is beautiful.

Q: what makes a novel beautiful also doesn’t matter.

A: but beauty in code is also about accomplishing purpose
efficiently and laying out text efficiently, which matters to readability and
reusability. Both of those things are
functions.

Q: but pro programmers can pick up code and tell you who
wrote it. [Hmm. Analysts in WWII could
also listen and figure out the “fist” of the specific
telegraph operator who was on duty. That
didn’t mean the telegraph operator was engaging in copyrightable
expression. We still have to figure out
the question “what should copyright cover?” and the answer is not “all things
that are different depending on who produces them”—if you ask me to drive a
route, the details of how I press on the gas and where I signal will differ
from the details of how other people do it, but that doesn’t make my driving
pattern copyrightable. Cf. Abraham
Drassinower’s recent book.]

Doctrinal buckets for courts imposing functionality limits:
but since they were struggling in these cases they used multiple buckets: most
common: if functional, lacks originality.
Or functional b/c implements method, system, procedure unprotectable
under §102(b). But also invoke multiple doctrines, sometimes as many as 5—doctrinal
cocktail. [Sounds like TM fair use cases.]
No protection for facts, etc.

Q: do you have a view on copyrightability versus
scope/narrowing determinations?

A: I talk about that issue in the paper—courts have to be
willing to say some things are just not copyrightable at all for functionality.
Some of the narrow scope cases involved instructions about how to use a
noncopyrighted product; if there was some variation possible, the court would
allow nonexact copying. Rulebooks: often
different ways to explain rules. Even if MacLean
Hunter was rightly decided, it should be narrow. We should spend more time
asking not just what’s original but what’s expressive. If result is thin
protection for some that’s cool.

A: I could go back and look; my sense is that generally it’s
when the other guy does something that’s too close that they register and sue.
No case I found involved a refused registration for compilations though they
would refuse registration for forms.

Copyright: high risk of competition costs may undermine
filtering here. Perhaps saved by merger doctrine; that’s what CONTU seemed to
think, that we needed some kinds of rights for incentives to exist. PGS works:
thresholds make some sense, at least to the extent that Congress decided to
lump car parts w/paintings. Exclusion makes
sense where we think there are no substantial incentive costs.

Design patent: failing to screen out dual nature features of
design means risk to competition. We’d have to think there are no serious
competition risks and that there are serious risks to incentives from
underprotection to make this sensible.

Linford: given your focus on competition, why doesn’t the
existence of alternatives always lead to nonfunctionality finding.

Lemley: Trade dress does better than design patent in having
abandoned the idea that alternatives = nonfunctionality. Affect on cost/quality
= subject to functionality screen.
Design patent has a miniscule definition of functionality: only if there’s
no other way of doing that, at best—there must be some design protection for
every element, if you read cases broadly.
We don’t want to accept alternatives as precluding functionality.

[unscheduled break for me]

Claiming Design

Jeanne Fromer & Mark McKenna

Claiming looks very different across regimes. One important
aspect of design patent is that it happens early on, often ex ante, before
commercialization. Another important
aspect: mode is visual; law discourages use of words to describe design. You draw more than what you’re claiming, with
broken lines to indicate what’s not claimed.
Trickery aspect enhanced by visual format. Infringement test is more of central claiming
by exemplar b/c infringement test asks whether ordinary observer would be
deceived into purchasing one design supposing it to be the other.

Trademark has 2D claiming; you have to figure out the scope
of someone’s rights along both dimensions at the same time. PTO has elaborate
rules for mark depiction and description of goods and services. But you don’t
need a registration for TM rights and none of the rules apply if you claim the
design as an unregistered mark, which is most litigated cases. Those elaborate
rules also don’t matter once you start litigating your registered mark, and
courts evaluate the nature of your use.
Allows you to make ex post judgments about what D is doing and shape
your claim w/defendant in mind. If you’d
been forced to delineate Two Pesos trade dress up front, you almost certainly
would have identified colors, but that’s not what D copied. Central claiming by
exemplar, but the exemplars aren’t very good.
PTO registration of TM in iPhone screen: long and specific, detailed
about color. In litigation, description
is broader and shorter. What courts have noticed, rightly, is that TM claiming
in litigation creates significant risk of moving target. Sometimes tried to impose a requirement that
you state upfront for purpose of litigation what your trade dress is; many
courts make you plead this. But there’s no constistency across courts about level
of generality required.

Internal consequences of claiming rules: broken line
phenomenon leads to overclaiming.
External consequences of claiming rules: overlapping regimes; compounds
strategic aspect. Illusion of precision
and notice, but trade dress can pop up later on as in Taco Cabana: don’t claim
color in litigation. You can say TM is
about protecting source identifiers so colors shouldn’t matter if consumers are
confused, but it undermines notice.

Lemley: I always understood that dashed lines had to be
there but weren’t sufficient.

McKenna: not clear. You could make the preamble have
operative effect: design of a clothing hanger, even if the entire outline is
dashed and the only claim is to the color of a clothing hanger. It’s not true that the dashed features have
to be present. There’s no all elements
rule.

Fromer: In UK, broken lines have meaning; US law is less
strict.

McKenna: maybe people would file more design patents to make
sure they’d have rights down the road; that’s a cost. TM allows you to identify
only what’s proved valuable.

Rosenblatt: utility patents—the moving target will depend on
what the competitor is doing, but without prior art to keep the patentee
honest. You want a very broad claim in design patent that you might not want in
utility patent. On the other side: secondary meaning may develop for things you
don’t really know are going to be your mark. The opportunity for a mark to
emerge for the shape of an awning rather than the color is very different.

McKenna: true, incentives differ. Fromer: we might want to
give people incentives to think about that up front. A lot of doctrines in utility patent are
about forcing people to develop inventions far enough to think through the
ramifications. McKenna: functionality is
the constraint on broad claiming in TM; but the more broadly you claim in design
patent, the less likely it is to be functional.
[Not clear if McKenna is defining breadth in the same way in both
contexts.]

Q: consider tacking in relation to scope.

McKenna: right now you can use design patent to claim
priority/secondary meaning in TM b/c of 14 years of exclusive use, which you
could not do for utility patent.

Copyright as Tortious Interference

Shyam Balganesh

Focus on looking at common law has been principally
structural: analytical basis of IP, not necessarily the normative basis.
Normative reasons for common law doctrines are not a great fit for IP—deterrence,
corrective justice, cost avoidance. We
should start thinking about common law not just as analogy but as homology:
distinction by Abraham Drassinower.
Analogy identifies a resemblance and makes a claim on the basis of that
identification. Homology identifies a
similarity but in addition makes an assertion about the basis of the
similarity. The common origin can be
anything: single source, evolution, motivating normative ideal. In law,
homology makes assertion about shared normative goals to explain or justify the
similarity.

Tortious interference w/contract: origins in Lumley v. Gye,
expanding and absorbed into US common law by 1900. Breaks off into tortious interference
w/prospective advantage—a standalone action. Instead of looking at existence of
a valid contract, a prospective economic advantage or lost chance is sufficient
to allow liability to kick in. Better known in the US than in other
countries. Exists in most jurisdictions
in the US; NY and Cal. have best-developed; different names in different
states, but all the same. Identifies a market prospect that is protectable b/c
reasonably likely to be realized and creates an exclusionary liability regime. Only
certain actions by a D trigger liability.
Standard: knowledge of prospect and intended interference; prospect
reasonably likely and not merely speculative; improper/wrongful interference;
ensuing economic harm. Intent = volitional act, rather than other mens rea.

Most litigation focuses on identifying reasonably likely prospect
and improper/wrongful interference. The
prospect and the wrong. Prospect: not a
mere hope or subjective expectancy. Courts want reasonable likelihood of
realization, based on market patterns and nature of activity in particular
domain. There’s an inverse correlation b/t the level of probability the court
requires and the public policy goal underlying the need for protection. Even
probabalistic recovery can justify liability if there’s a perceived need to
create incentive for P to invest in this activity. Not purely an epistemic probability based
determination; supplemented by public policy/social welfare goals where
incentive to invest in economic activity justifies protection.

The wrong: must be wrongful means or motive; unethical
behavior based on commercial norms; anticompetitive conduct.

The defense: privilege of interference. (See similarity: not all copying is wrong.)

Very few normative rationales offered for this tort; three
most commonly offered are (1) free riding and the ex ante incentive, BeVier
1990. There are many domains where info investment is needed; allowing third
party to free ride when it can obtain the info on its own can justify allowing
the action, in order to preserve incentive to invest in info gathering. (2) Commercial
morality, as w/trade secret; completely nebulous. (3) Ownership of prospect as
a property right, Epstein.

McKenna: Tortious interference is maddening b/c law is
completely unclear about what kinds of conduct count as wrongful interferences.
I get the homology, but are you importing more uncertainty than you’re gaining?

A: black box = jury question. I am trying to give a
framework for judicial decisions. I also don’t want to transpose the
uncertainty. But there are patterns in the case law—3 distinctive categories of
improper conduct: (1) independently actionable unlawful conduct; (2) acts in
the shadow of unlawful conduct; (3) lawful but unethical conduct. But I love living w/uncertainty.

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